When an inventor is putting together their patent application and crafting their patent claims, typically visualize how they intend to use their invention. But in many cases, there’s far great potential profit in considering how others might creatively use their product years or even decades later.
If you’re looking to maximize the applicability and enforcement potential of your invention, the Law Office of Michael O’Brien can help. Below is just one example of how a bit of creativity can generate millions in unanticipated revenue.
Between 1999 and 2001, iLife Solutions—a medical technology company that targeted the elder care market—filed 4 patent applications for motion technology intended to detect when an elderly person fell and needed assistance. On iLife’s now defunct site, they state that the company “focused on inventing and improving fall detectors which bring emergency help automatically.”
Correspondingly, the intended application of their inventions was extremely narrow: for use in some sort of device to be worn by an infirm person, which could then send a signal when the technology sensed movement indicating that the wearer had suddenly fallen.
Fortunately for iLife, their patent claims were very broad, and didn’t limit the application of their inventions.
For instance, in US Patent No. 7,145,461, which had a priority date of January 31st, 2001, the first patent claim states that the invention is a “system that evaluates body activity relative to an environment, said system comprising a processor that is associable with a sensor for sensing dynamic and static accelerative phenomena of said body.”
While the intention might have been to determine when someone fell—and evidence suggests that the patents didn’t make any money in this pursuit—this description and the contingent sub-claims are incredibly broad in nature. And as demonstrated by the wealth of motion-based video game systems and smartphone games that are now ubiquitous, those applications involve entertainment.
Eventually, iLife CEO Michael Lehrman recognized this, and the fact that sensor packages very similar to iLife’s patents were being used by Nintendo in the motion controllers for its Wii and WiiU systems. In 2013, iLife filed a patent lawsuit against Nintendo, and in August a jury awarded iLife $10.1 million, roughly 7% of the $144 million in damages they requested.
iLife has also filed lawsuits against Fitbit, Under Armour, and Philips. At least some of those suits have been settled, and it’s unclear whether iLife has failed to extract payments from any defendants thus far.
Too often, inventors focus on how they intend to use their inventions, versus what novel applications might be conceived of in other industries.
Regardless of your feelings about dormant patents being resurrected for litigious purposes years later, there is an object lesson in all of this: Don’t limit your vision for your patents.
An inventor’s technology may fail to generate revenue via its intended purpose in the short run, as was the case with iLife Solutions’ elder care solutions. However, more than a decade after their patents were published, they were enforced for millions of dollars in applications likely not even dreamt of at the time.
Speaking from experience, inventors tend to really hung up on intended use, but that doesn’t impact patentability or subsequent enforcement. Video games represent just about the complete opposite of the original target market for iLife’s inventions. But ultimately, technology intended for the elderly found its place in the hands of millions of teenagers.
To learn more about how you can broaden the enforceability and potential profitability of your patent, contact the Law Office of Michael O’Brien by calling 916-760-8265, or send us a message using our contact form.